Given the burden of proof necessary to establish a finding of trademark genericness, it comes as no surprise that a recent Trademark Trial and Appeal Board decision affirmed this principle of trademark law.
In the trademark opposition case Frito-Lay North America Inc. v. Real Foods Pty. Ltd., Applicant sought to register two trademarks, CORN THINS for “crispbread slices primarily made of corn” and RICE THINS for “crisp bread slices primarily made of rice.” (the “THIN marks”). The terms corn and rice were disclaimed in the applications. The Opposer, Frito-Lay, in its notice of opposition, alleged that Applicant’s THIN marks were generic names for Applicant’s respective goods; highly descriptive of Applicant’s goods so as to be incapable of acquiring distinctiveness; and merely descriptive of crispbread made of thin slices of corn or rice, without evidence of acquired distinctiveness.
The Trademark Trial and Appeal Board recognizes a two-part test for genericness:
(1) what is the genus of goods or services at issue; and
(2) does the relevant public understand the designation primarily to refer to that genus of goods and services.
In doing so, the relevant consuming public’s perception is the primary consideration. Such evidence may be in the form of consumer surveys, dictionaries, trade journals, newspapers, or other credible sources. Here, the Opposer introduced evidence to support its claim that RICE THINS and CORN THINS are generic, including dictionary definitions, examples of Opposer’s own use of “thin” for its various snack product, as well as third-party marketplace uses. In addition, Opposer introduced various internet search results for use of “thin” to promote third-party snack products. To refute the claim of genericness, Applicant submitted the trademark registrations of numerous third-parties who have received registrations for marks containing the word “thins” in connection with snack and food products that did not include a disclaimer for the “thin” portion of the marks. Here, the Board concluded that based upon the totality of the evidence, “thins” was not generic due to the various marketplace use of thins in combination with various food items and as a source-indicator for third-party products.
The Board went on to discuss whether RICE THINS and CORN THINS were incapable of acquiring distinctiveness, which could occur if the word or phrase being considered is so laudatory or descriptive as to be incapable of acquiring distinctiveness. Here, the Board found that “corn thins” and “rice thins” were not so highly descriptive or laudatory so as to prevent the terms from being source indicators of Applicant’s products. However, at the end of the day, what was required of Applicant was that it had to make a showing that its “thins” marks were not merely descriptive of its goods. Applicant failed to do so, due in part to its lack of substantial sales or advertising expenditures connected with its rice thins and corn thins products. Accordingly, Applicant, having failed to establish evidence of acquired distinctiveness, was refused registration and the opposition was sustained on the ground that Applicant’s marks were merely descriptive and did not acquire distinctiveness.